ON THE MARK Trademark News and Views

U.S federal court in Washington State tosses TRADER JOE’S lawsuit aimed at Vancouver, Canada’s PIRATE JOE’s food store, which buys genuine TRADER JOE’S items purchased in the U.S. and resells them in a South Pacific–themed grocery located in Vancouver B.C. To protest being sued, the Canadian grocer dropped the “P” and became “_IRATE JOE’S”

WHAT ARE THE ISSUES

Does a U.S. Court have power (subject matter jurisdiction) to decide allegations of infringement involving conduct entirely outside the U.S.?

Can U.S. trademark rights “cross the border?”

WHAT’S AT STAKE

TRADER JOE’S ability to stop a self-declared trademark “Pirate” who is no ordinary “Joe,” but rather one who makes no bones about being a pirate who parrots the TRADER JOE’s mystique

WHAT’S THE LAW

U.S. trademark law (The Lanham Act) can reach trademark infringement abroad where

The infringer’s action creates some effect on American foreign commerce

The effect is great enough to threaten the U.S. trademark owner with “cognizable” (i.e., real and provable) injury, and

“The interests of and links to American foreign commerce[are] sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority.”